No. 19-GSR-4287

________________________________________________________________

UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

________________________________________________________________

BALLISTIC HOLDINGS, INC. and BALLISTIC MEMORY, INC.,

Appellants,

v.

CONSUMERCAM, LLC,

Appellee.

________________________________________________________________

APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF PENNYSTON IN CIVIL ACTION NO. 1:16-GSR-10814,

JUDGE OLIVER S. RANGO ________________________________________________________________

BRIEF OF APPELLEE CONSUMERCAM, LLC.

AKINA R. KHAN SHEILA S. NIAZ KHAN & NIAZ, P.A. 1000 Main Parkway Emerald City, Pennyston 12345 (555) 555-5555 KhanNiaz@anymail.com Counsel for Appellee

February 4, 2019

i

CERTIFICATE OF INTEREST

Counsel for the appellee certifies the following:

1. The full name of every party or amicus represented by me is:

ConsumerCam, LLC.

________________________________________________________________

2. The name of the real party in interest represented by me is:

ConsumerCam, LLC.

________________________________________________________________

3. All parent corporations and any publicly held companies that own 10 percent or

more of the stock of the party represented by me are:

There are no parent companies.

________________________________________________________________

4. The names of all law firms and the partners or associates that appeared for the

party now represented by me in the trial court or are expected to appear in this Court

are:

________________________________________________________________

February 4, 2019 /s/ Akina R. Khan

Date Signature of Counsel

Akina R. Khan Printed Name of Counsel

February 4, 2019 /s/ Sheila S. Niaz Date Signature of Counsel

Sheila S. Niaz

Printed Name of Counsel

ii

TABLE OF CONTENTS

page

CERTIFICATE OF INTEREST. ................................................................................................... i

TABLE OF CONTENTS. ............................................................................................................ ii

TABLE OF AUTHORITIES. ....................................................................................................... iv

STATEMENT OF RELATED CASES. . ................................................................................... vii

JURISDICTIONAL STATEMENT. ........................................................................................... 1

STATEMENT OF THE ISSUES. ................................................................................................ 1

STATEMENT OF THE CASE. .................................................................................................... 2

STANDARD OF REVIEW. ........................................................................................................ 5

SUMMARY OF THE ARGUMENT. .......................................................................................... 6

I. This Court should affirm the district court’s grant of summary judgment of patent exhaustion because, when the facts and reasonable inferences are construed in Ballistic Holdings’ favor, there was no genuine issue of material fact that the Agreement was a sale in all meaningful respects, which entitled ConsumerCam to judgment as a matter of law. ................................................................................................................................ 7

A. This Court reviews the district court’s grant of summary judgment de novo, and the factual findings underlying the district court’s decision are reviewed for clear error. .................................................8

B. Ballistic’s own evidence shows that referring to the sale as a licensing agreement was merely a pretext to avoid the legal consequences of a sale. .........................................................................9

C. ConsumerCam had no obligation under U.S. patent law to comply with Ballistic’s post-sale restrictions because any reasonable jury would find that Ballistic’s rights to enforce the restrictions through patent laws were exhausted. .............................................................15

D. Public policy disfavors restraints on alienation, and if the district court’s grant of summary judgment is not affirmed, this Court should, at minimum, order a remand back to the district court. .16

II. This Court should reverse the district court’s decision to deny summary judgment because ConsumerCam was entitled to judgement as a matter of law that the claims are not enabled and there is no genuine dispute as to any material fact. ............ 17

iii

A. This Court reviews the district court’s final decision of summary judgment de novo, while the underlying factual basis for this determination is reviewed for clear error. ..................................................... 18

B. This Court should reverse the district court’s decision because the district court failed to properly apply the Wands factors and improperly determined that ConsumerCam was not entitled to summary judgment of non-enablement. ................................................................................................ 19 1. There is no genuine dispute of material fact that the breadth of the

claims is not commensurate with the breadth of the disclosure. ..20 2. There is no genuine dispute of material fact regarding the level of

one of ordinary skill in the art because the expert testimony and the specification demonstrate that a POSITA would not have been able to practice the claimed invention. .....................................................22

3. There is no genuine dispute of material fact regarding the level of predictability in the art because the specific dimension of length cannot be accurately predicted without testing. ............................23

4. There is no genuine dispute of material fact that the amount of direction provided by the inventor in the patent disclosure is insufficient to make the claimed invention. ....................................25

C. The totality of the circumstances show that undue experimentation would be necessary for a POSITA to practice the invention. .................................. 26

CONCLUSION. .......................................................................................................................... 26

PROOF OF SERVICE. ................................................................................................................... I

CERTIFICATE OF COMPLIANCE WITH THE TYPE-VOLUME LIMITATION, TYPEFACE REQUIREMENTS, AND TYPESTYLE REQUIREMENTS. ............................. II

iv

TABLE OF AUTHORITIES

U.S. Supreme Court Cases

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986). ........................................................ 5, 6, 9

Ashcroft v. Iqbal, 556 U.S. 662 (2009). ....................................................................................... 17

Bauer & Cie v. O’Donnell, 229 U.S. 1 (1913). ........................................................................... 10

Gen. Talking Pictures Corp. v. W. Elec. Co., 304 U.S. 175 (1938). ........................................... 12

Impression Prods. v. Lexmark Int’l, Inc., 137 S. Ct. 1523 (2017). ..................................... passim

Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986). .................... 6, 8, 9, 13

Straus v. Victor Talking Mach. Co., 243 U.S. 490 (1917). ......................................................... 10

United States v. Masonite Corp., 316 U.S. 265 (1942). ....................................................... 10, 12

U.S. Court of Appeals Cases

AK Steel Corp. v. Sollac, 344 F.3d 1234 (Fed. Cir. 2003). ........................................................ 20

Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180 (Fed. Cir. 2014). ................................ 19

Alfred E. Mann Found. for Sci. Research v. Cochlear Corp., 841 F.3d 1334 (Fed. Cir. 2016). ..................................................................................... 18

Branch Banking & Tr. Co. v. D.M.S.I., LLC, 871 F.3d 751 (9th Cir. 2017). ............................ 18

Chiron Corp. v. Genentech Inc., 363 F.3d 1247 (Fed. Cir. 2004). ............................................. 25

Earl v. Nielsen Media Research, Inc., 658 F.3d 1108 (9th Cir. 2011). .............................. 5, 8, 18

Envtl. Designs, Inc. v. Union Oil Co., 713 F.2d 693 (Fed. Cir. 1983). .................................... 22

Home Sav. of Am. v. United States, 399 F.3d 1341 (Fed. Cir. 2005). ..................................... 18

In re Beach, 152 F.2d 981 (C.C.P.A. 1946). ............................................................................... 19

In re Fisher, 427 F.2d 833 (C.C.P.A. 1970). .............................................................................. 20

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In re GPAC Inc., 57 F.3d 1573 (Fed. Cir. 1995). ...................................................................... 23

In re Moore, 439 F.2d 1232 (C.C.P.A. 1971). ............................................................................ 20

In re Vickers, 141 F.2d 522 (C.C.P.A. 1944). ............................................................................ 24

In re Wands, 858 F.2d 731 (Fed. Cir. 1988). ................................................................. 18, 20, 26

In re Wright, 999 F.2d 1557 (Fed. Cir. 1993). ........................................................................... 19

Jazz Photo Corp. v. United States, 439 F.3d 1344 (Fed. Cir. 2006). ............................................ 8

Keurig, Inc. v. Sturm Foods, Inc., 732 F.3d 1370 (Fed. Cir. 2013). ........................................... 13

LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364 (Fed. Cir. 2006). .................................... 12

Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305 (Fed. Cir. 2016). .............................................. 5

Takeda Pharm. Co., Ltd v. Handa Pharm., LLC, 2013 WL 9853725 (N.D. Cal. Oct. 17, 2013). ................................................................ 24

Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671 (Fed. Cir. 2015). . ........... 19, 20

Statutes

28 U.S.C. § 1295(a)(1) (2012). ..................................................................................................... 1

28 U.S.C. § 1338(a) (2012). .......................................................................................................... 1

35 U.S.C. § 112(a) (2012). .......................................................................................................... 19

35 U.S.C. § 271(c) (2012). ............................................................................................................ 1

Rules

Fed. Cir. R. 47.5. ......................................................................................................................... vii

Fed. R. App. P. 25(d). ................................................................................................................... I

Fed. R. App. P. 4(a). .................................................................................................................... 1

vi

Fed. R. Civ. P. 19. ......................................................................................................................... 1

Fed. R. Civ. P. 56(a). ................................................................................................................ 5, 9

Fed. R. App. P. 32(a). .................................................................................................................. II

Secondary Sources

Black’s Law Dictionary (10th ed. 2014). .................................................................................... 10

U.S. Patent & Trademark Office, Manual of Patent Examining Procedure, § 2164 (9th ed. 2017). .................................................................................................................................. 24, 25

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STATEMENT OF RELATED CASES

Pursuant to Federal Circuit Rule 47.5, counsel for the appellee ConsumerCam, LLC.

certify the following:

1. There are no other appeals in or from the same civil action or proceeding in the lower court or body that were previously before this or any other appellate court.

2. There are no cases known to counsel to be pending in this or any other court that will directly affect or be directly affected by this court’s decision in the pending appeal.

February 4, 2019 /s/ Akina R. Khan Date Signature of Counsel

Akina R. Khan Printed Name of Counsel

February 4, 2019 /s/ Sheila S. Niaz Date Signature of Counsel

Sheila S. Niaz Printed Name of Counsel

1

JURISDICTIONAL STATEMENT

ConsumerCam, LCC (“ConsumerCam”) appeals from a final grant of summary

judgment entered in the U.S. District Court for the District of Pennyston in Civil Action

No. 1:16-GSR-10814, a suit for infringement of U.S. Patent GSR,784,314, (“’314 Patent”)

assigned to Ballistic Holdings, Inc. (“Ballistic Holding”), under 35 U.S.C. § 271(c) (2012).

Ballistic Memory, Inc. (“Ballistic Memory”) was properly joined as a required plaintiff

under Fed. R. Civ. P. 19. The district court possessed original subject matter jurisdiction

under 28 U.S.C. § 1338(a) (2012). A notice of appeal complying with Fed. R. App. P. 4(a)

was timely filed and docketed as Appeal No. 19-GSR-4287. The Court of Appeals for the

Federal Circuit has exclusive jurisdiction over this appeal under 28 U.S.C. § 1295(a)(1)

(2012).

STATEMENT OF THE ISSUES

I. Under Impression Prods. v. Lexmark Int’l, Inc., 137 S. Ct. 1523 (2017) does the

delivery of Devices practicing a patented technology, in exchange for a

contractually agreed–to purchase price, constitute a sale of the Devices

exhausting the patentee’s rights to control the downstream use of the Devices?

II. When a patent specification overbroadly claims an invention, withholds critical

limitations, and no reasonable jury could find that a POSITA could fully practice

the claimed invention without undue experimentation, does the patent

specification fail to enable the claimed invention?

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STATEMENT OF THE CASE

ConsumerCam is a company known for its superior microprocessors and high-

end consumer-grade cameras. (R. 2.) In searching for a superior semiconductor for its

high-end cameras, (R. 3; App. 13.), ConsumerCam became intrigued by Ballistic

Memory’s semiconductor Device (“Device”) that incorporated a patented graphene

nanoribbon field–effect transistor (“GNRFET”). (R. 2.) These Devices were advertised to

be the best and most innovative in the market and can be incorporated in

microprocessors, memory hardware and many other electronic products. (R. 3; App.

12.)

Ballistic Memory’s ’314 Patent claimed a GNRFET containing a graphene

nanoribbon (“GN”), which when properly manufactured to ranges of lengths and

widths, can achieve ballistic switching speed. (App. 7.) Claim 1 recites to a GNRFET

that can achieve switching speed of 1–1.2 THz when the GN is 5–35 nm wide and 20–23

nm long. (App. 6, 7, 25.) However, the specification and Fig. 2 only disclosed one “full,

clear, concise, and exact” dimension—that nanoribbons with 5–15 nm width and 22 nm

length achieve the claimed switching speed. (App. 6, 9, 23, 25.) Ballistic Memory’s

expert had to supplement the gap in disclosure by asserting that it would somehow be

obvious to a person of ordinary skill in the art (“POSITA”) that decreasing the length

can dramatically increase the switching speed, resulting in the desired switching speed

of over 1 THz, even at 35 nm width. (App. 3, 25, 26.) He suggested a POSITA would

recognize this by simply conducting “minimum, routine experimentation.” (App. 25.)

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However, due to manufacturing limitations at the time of filing, the range of 15–35 nm

was not practicable.

Impressed by the GNRFET technology, (App. 7), ConsumerCam agreed to buy

4,000,000 of the Devices at $8 each for a total of $32,000,000 from Ballistic Memory. (R.

3.) The document memorializing the sale (“Agreement”) set the delivery date to be on

July 6, 2015, warranted the Devices for two years, and attempted to limit the use or

resale of the Devices into blockchain technology without prior permission from Ballistic

Memory. (App. 3, 10.) Following the Agreement, Ballistic Memory’s own Chief

Marketing Officer, Glinda Goode, made a press announcement titled “Ballistic Memory

to Sell Two Million Semiconductor Devices to ConsumerCam for Use in High–End

Cameras.” (App. 12 (emphasis added).) The press release stated “ConsumerCam will

purchase 2,000,000 semiconductor Devices from Ballistic Memory”. (Id.)

On October 5, 2015, Ballistic Memory consented to ConsumerCam’s resale of

2,000,000 Devices to OffTheBlockchain, a Swedish company intending to use them in

blockchain technology. (R. 3, 4.) Unforeseeably, Sweden retroactively imposed a 50%

sales tax on sellers of blockchain products on October 28, 2015. (R. 4.) The retroactive tax

alone induced a $1,000,000 loss on the resale. (Id.) Ballistic Memory, however,

demanded commission on the resale on November 12, 2015, and due to the unforeseen

loss from the tax, ConsumerCam responded that it would not make the payment. (Id.)

Ballistic Memory could have asserted a breach of contract claim until November

12, 2016 because of Pennyston’s one-year statute of limitations on contract claims. (Id.)

Nonetheless, on December 3, 2016, more than a year after the contract claim accrued,

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Ballistic Memory filed a complaint against ConsumerCam. (Id.) Ballistic Memory

claimed ex post facto, that the sale of 4,000,000 Devices was merely a license and alleged

that because of the resale, ConsumerCam induced and contributed to the infringement

of the ’314 Patent by OffTheBlockchain. (Id.) The parties stipulated to indirect

infringement. (R. 5.) ConsumerCam moved for summary judgment, arguing that (1) the

patent was invalid for lack of enablement, and (2) Ballistic Memory’s patent rights were

exhausted after selling the Devices to ConsumerCam, under Impression Prods. v. Lexmark

Int’l, Inc., 137 S. Ct. 1523 (2017). (Id.)

The U.S. District Court for the District of Pennyston, in Civil Action No. 1:16-

GSR-10814, granted ConsumerCam’s motion for summary judgment of patent

exhaustion. (App. 3.) The district court relied on Ballistic Memory’s press release and on

the deposition testimony of John Tinny, one of the inventors of the ‘314 Patent. (App. 4,

14.) The district court found that Ballistic Memory’s choice of calling the Agreement a

“nonexclusive license” was strategic. (App. 21.) Although ConsumerCam’s own

counsel, Dorothy Billina, referred to the Agreement as a “licensing agreement” at times,

(App. 17,) and the Agreement itself limited some rights to use and resale the Devices

into blockchain market, (R. 3,) the district court nevertheless found that there was

overwhelming evidence that the Agreement between Ballistic Memory and

ConsumerCam was a sale. (App. 4.)

The district court denied Ballistic Memory’s motion for summary judgment

because it found that there were genuine issues of material fact. (App. 3.) The district

court interpreted the claims for their plain and ordinary meaning. (App. 2.)

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ConsumerCam argued the ’314 Patent was non–enabling on two grounds. First,

ConsumerCam claimed that the specification did not enable the full scope of claim 1

because that claim recites that GNs 5–35 nm wide can achieve switching speeds of 1.0 to

1.2 THz, while Fig. 2 depicts that only GNs of widths 5 to 10 nm achieve switching

speeds of 1.0 to 1.2 THz. (App. 2.) Second, Fig. 2 only enabled a GNRFET having the

length 21–23 nm, but the claim captured a much larger scope. (App. 3.) Relying on the

expert’s opinion, the district court found that genuine disputes of material fact existed

and denied summary judgment of non-enablement. (Id.)

Subsequently, ConsumerCam appealed the denial of summary judgment of

non-enablement, and Ballistic Memory appealed the grant of summary judgment of

patent exhaustion. (R. 5.)

STANDARD OF REVIEW

This Court applies the law of the regional circuit when reviewing a district

court’s grant of summary judgment involving matters of patent law. Microsoft Corp. v.

GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016) (citation omitted). The Ninth Circuit

reviews the granting and denial of summary judgment de novo, constructing reasonable

inferences most favorable to the nonmoving party. Earl v. Nielsen Media Research, Inc.,

658 F.3d 1108, 1112 (9th Cir. 2011) (citation omitted).

Summary judgment is appropriate when no genuine dispute of material fact

exists and “the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). The movant bears the burden of

6

proving that no genuine issue of material fact exists. See Matsushita Elec. Indus. Co. v.

Zenith Radio Corp., 475 U.S. 574, 586 (1986). A genuine dispute exists if the evidence can

support a reasonable jury to return a verdict for either party. Anderson, 477 U.S. at 248.

A fact is material if it affects the outcome of the case. Id.

SUMMARY OF THE ARGUMENT

Recognizing the century-old doctrine of exhaustion, the district court granted

summary judgment in favor of ConsumerCam. Finding exhaustion had occurred

because, even after taking all reasonable inference most favorable to Ballistic Memory,

the transaction between Ballistic Memory and ConsumerCam was a sale of patented

products. Ballistic Memory also failed to establish any genuine issue of material fact

under the standard set forth in Impression Prods. v. Lexmark Int’l, Inc. The district court

found that Ballistic Memory called the agreement a “license” merely to attempt to

preserve its patent rights. The contractual provisions intending to limit the resale of the

Devices were simply attempts to overcome the evidence suggesting that Ballistic

Memory had enjoyed full economic rewards and thereby exhausted all its right in the

Device’s delivery according to this transaction. No reasonable jury could have found

that ConsumerCam failed meet its burden of establishing patent exhaustion, making the

district court granting summary judgment appropriate.

A patentee cannot arbitrarily induce additional public costs by framing its sales

into licenses. Taking any reasonable inference most favorable to Ballistic Memory, the

nature of the transaction and the intent of the parties still make this transaction a sale,

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not a license. With respect to enablement, the district court failed to recognize that

Ballistic Memory’s expert’s testimony, when properly considered, failed to raise any

genuine issue of material fact. Thus, the district court failed to recognize the necessity of

conducting a robust analysis for non-enablement under the Wands factors. Even

construing Ballistic Memory’s expert’s opinion on the facts most favorable to Ballistic

Memory, no reasonable jury would find any Wands factors to be satisfied. Furthermore,

even without applying all eight Wands factors, the district court failed to recognize that

the expert witness had effectively conceded that a POSITA would not be able to practice

the full scope of the claims without undue experimentation. Therefore, the district

court’s denial of summary judgment on the non-enablement issue is entirely unjustified.

I. This Court should affirm the district court’s grant of summary judgment of patent exhaustion because, when the facts and reasonable inferences are construed in Ballistic Holdings’ favor, there was no genuine issue of material fact that the Agreement was a sale in all meaningful respects, which entitled ConsumerCam to judgment as a matter of law.

In all meaningful respects, the Agreement constituted a sale exhausting Ballistic

Holdings’ rights in the 4,000,000 units of the Device covered by the Agreement. The full

price of the 4,000,000 units was paid up-front, and delivery of the units completed the

sale. As the district court correctly found, “[t]he evidence overwhelmingly shows that

Ballistic [Memory] sold ConsumerCam the semiconductor Devices, while framing the

sale agreement as a license to attempt to preserve their patent enforcement rights.”

(App. 4.)

Under the doctrine of patent exhaustion and Impression Products v. Lexmark Int’l,

Inc., a licensee’s authorized sale exhausts the patentee’s rights in the units sold. 137 S.

8

Ct. at 1534–35. Thus, Ballistic Memory’s sale to ConsumerCam exhausted Ballistic

Holdings’ patent rights in the 4,000,000 units sold under the Agreement. Accordingly,

Ballistic Memory and Ballistic Holdings (collectively “Ballistic”) can no longer impose

restrictions on its bona fide purchasers’ post-sale activities using patent law. See id.

ConsumerCam, therefore, had no obligation under U.S. patent law to comply

with the unenforceable post-sale restrictions. The district court got it exactly right when

it found that ConsumerCam was entitled to summary judgment because Ballistic’s

patent rights were exhausted.

A. This Court reviews the district court’s grant of summary judgment de novo, and the factual findings underlying the district court’s decision are reviewed for clear error.

Under Ninth Circuit law, this Court “review[s] the district court’s grant of

summary judgment de novo.” Earl, 658 F.3d at 1112 (citation omitted). This Court

reviews the district court’s factual findings for clear error. Home Sav. of Am. v. United

States, 399 F.3d 1341, 1346 (Fed. Cir. 2005).

As the party asserting the affirmative defense of patent exhaustion,

ConsumerCam bears the burden of showing exhaustion by a preponderance of the

evidence. See Jazz Photo Corp. v. United States, 439 F.3d 1344, 1350 (Fed. Cir. 2006),

abrogated on other grounds by Impression Prods. v. Lexmark Int’l, Inc., 137 S. Ct. 1523 (2017).

ConsumerCam bears the burden of showing that summary judgment is proper. See

Matsushita Elec. Indus. Co., 475 U.S. at 586. However, “when the moving party has

carried its burden under Rule [56(a)], its opponent must do more than simply show that

there is some metaphysical doubt as to the material facts.” Id. Thus, to prevail on

9

appeal, Ballistic must show that there are genuine issues, and not mere “metaphysical

doubts[,] as to the material facts.” See id. at 586–87.

B. Ballistic’s own evidence shows that referring to the sale as a licensing agreement was merely a pretext to avoid the legal consequences of a sale.

ConsumerCam met its burden of showing patent exhaustion by a preponderance

of the evidence because Ballistic’s own evidence weighs in favor of construing the

Agreement as a sale. The evidence shows that references to a license agreement were

made as mere pretext to retain post-sale control over the 4,000,000 units purchased by

ConsumerCam. The effect of such an authorized sale is to exhaust Ballistic’s rights and

nullify its right to enforce post-sale restrictions using patent laws. See Impression Prods.,

137 S. Ct. at 1529.

1. Labelling the sale executed by the Agreement a “nonexclusive license” cannot alter the Agreement into a license and does not create any genuine issues of material fact.

Ballistic argues that there is a genuine dispute of material fact because Ballistic

contests that the Agreement is a license, while ConsumerCam maintains that the

Agreement created a sale. Whether the Agreement is a sale or license is a material fact

since it determines whether exhaustion occurred. See Anderson, 477 U.S. at 248.

However, the dispute over the interpretation of the Agreement is not genuine because

the evidence cannot convince a reasonable jury to return a verdict for Ballistic. See id.

In determining whether a sale exhausting the patentee’s monopoly rights in the

patent has occurred, courts have long “refused to allow the form into which the parties

chose to cast the transaction to govern.” United States v. Masonite Corp., 316 U.S. 265, 278

10

(1942). More importantly, disguising a sale to be a license, merely by labelling the

transaction a license, cannot transform a bona fide sale into a license. Bauer & Cie v.

O’Donnell, 229 U.S. 1, 16 (1913). From Lord Coke’s time, such tactics to disguise a clear

and bona fide sale as a license in order to fix the purchaser’s resale price and other post-

sale activities have been deemed repugnant to the public interest. Straus v. Victor Talking

Mach. Co., 243 U.S. 490, 500–01 (1917).

There is no genuine dispute that the Agreement constituted a sale. First,

ConsumerCam paid the full, fixed price of $32,000,000 for the 4,000,000 units purchased.

(R. 3.) Even under the most rudimentary definition of a sale, this exchange of goods for

a lump sum consideration constitutes a bona fide sale. See Bauer & Cie, 229 U.S. at 13

(“[T]o vend is to part with the thing for a consideration.”); Sale, Black’s Law Dictionary

(10th ed. 2014) (defining sale as a “transfer of property or title for a price”). Second, the

rights received by ConsumerCam in exchange for the $32,000,000 were exactly those

that one would expect a bona fide purchaser to receive—the rights of use and resale. (R.

3.) See Impression Prods. 137 S. Ct. at 1534 (explaining that the purchaser has “the right to

use, sell, or import [purchased items] because those are the rights that come along with

ownership”). Third, Ballistic provided a two-year warranty promising to replace any

defective units. (R. 3.) This warranty is characteristic of a regular sale, and further

exposes the identity of the parties to the transaction as that of seller and purchaser,

making the Agreement a contract for sale, rather than a “nonexclusive license.” (Id.)

The heart of Ballistic’s argument, nonetheless, rests on the fact that it labelled the

Agreement a “nonexclusive license.” (Id.) Ballistic’s own press release, however, called

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the transaction a sale. (App. 12.) By calling ConsumerCam’s subsequent sales “resales,”

(R. 3 (emphasis added)), Ballistic further showed that the transaction under the

Agreement resembled a sale. More importantly, the deposition testimony of Mr. Tinny,

shows that Ballistic’s choice of calling the Agreement a “nonexclusive license” was

strategic. (App. 21.) While Mr. Tinny understood the Agreement to have been a sale,

(App. 18), he was instructed by Ballistic’s upper management to call the Agreement a

license to strategically preserve Ballistic’s patent rights. (App. 20.) Ballistic employed

this strategy to maintain control over ConsumerCam’s resale of the Devices in the

lucrative market of blockchain technology since Ballistic knew that blockchain

technology was “hot” at the moment. (R. 3; App. 13.)

Even when the facts and reasonable inferences are construed in Ballistic’s favor,

there is no genuine issue to be resolved at trial regarding the character of the

Agreement. The Agreement was a sale, and summary judgment in ConsumerCam’s

favor should be upheld.

2. Because ConsumerCam paid Ballistic its full reward for the 4,000,000 units, Ballistic’s rights in those units were exhausted, entitling ConsumerCam to judgment as a matter of law.

The right of a patent owner to restrict the use and resale of its products

practicing the patent disappears as soon as the products are placed “into the hands of a

purchaser in the ordinary channels of trade and full consideration paid therefor.” Gen.

Talking Pictures Corp. v. W. Elec. Co., 304 U.S. 175, 180 (1938). The relevant inquiry is

“whether or not there has been such a disposition of the article that it may fairly be said

that the patentee has received his reward for the use of the article.” Masonite Corp., 316

12

U.S. at 278 (citations omitted). Even when a patentee grants a license, the “transaction

constitutes a sale for exhaustion purposes” if the patentee receives its full reward

through the transaction. LG Elecs., Inc. v. Bizcom Elecs., Inc., 453 F.3d 1364, 1370 (Fed. Cir.

2006) (citation omitted), rev’d on other grounds, Quanta Comput., Inc. v. LG Elecs., Inc., 553

U.S. 617 (2008).

Even when the facts are viewed in the light most favorable to Ballistic, the

transaction under the Agreement exhausted Ballistic’s patent rights since Ballistic

received its full and fair reward from the payment of $32,000,000. The transaction was

“in the ordinary channels of trade,” and therefore, as soon as the units of the Device

were placed in ConsumerCam’s possession, the sale exhausting Ballistic’s rights had

occurred. See Gen. Talking Pictures Corp., 304 U.S. at 180.

While Ballistic might argue that “full consideration” for the units sold under the

Agreement would require the payment of the per-unit fee for selling the Devices in the

blockchain market, any reasonable jury would find that Ballistic’s stance was created

out of whole cloth. Post-sale conditions and restrictions on resale are unlawful under

patent laws. Impression Prods., 137 S. Ct. at 1529. Accordingly, these restrictions cannot

bear on the sufficiency of the reward or consideration that makes a transaction a sale for

patent exhaustion purposes. Holding otherwise would be to legitimize creative use of

meaningless post-sale restrictions to make an end run around long-established patent

law.

Furthermore, Ballistic has not proffered any evidence contrary to the fact that the

payment of $32,000,000 constituted full consideration for the 4,000,000 units sold. It has

13

not shown that the sale price of $8.00 per unit initially charged to ConsumerCam was

any less than what it normally charges. Even if Ballistic could show that it had offered a

lower price per unit in exchange for the ability to impose post-sale restrictions, those

restrictions could not be used to prevent exhaustion. See id. at 1525–26 (finding that

even though patentee had offered a lower price, patentee could not impose post-sale

restrictions in exchange for discounted price). Finally, Ballistic “must do more than

simply show that there is some metaphysical doubt as to the material facts” by

affirmatively showing that the $8.00 per unit charged to ConsumerCam was less than

the “full reward.” See Matsushita Elec. Indus. Co., 475 U.S. at 586.

Ballistic wanted to reap the profits of ConsumerCam’s resale of the Devices, and

at the same time, wanted ConsumerCam to pay full sale price per unit sold. Ballistic

cannot have it both ways and recover twice for the same units of the Device. Permitting

Ballistic to recover multiple times would be contradictory to the law and purpose

behind the doctrine of patent exhaustion. See Keurig, Inc. v. Sturm Foods, Inc., 732 F.3d

1370, 1375 (Fed. Cir. 2013). Consequently, no reasonable jury could find in Ballistic’s

favor, and there are no genuine disputes of material facts. Summary judgment in

ConsumerCam’s favor was therefore appropriate.

3. Imposing limitations on ConsumerCam’s post-purchase use and resale of the 4,000,000 units does not convert the sale into a license.

The restrictions on use and resale of the 4,000,000 units cannot alter the nature of

the Agreement from a sale into a license. To argue that the Agreement was a license

because of the restrictions, and then use the character of the Agreement as a license to

14

validate the restrictions, is circular and unlawful under Impression Products, 137 S. Ct. at

1534–35. Impression Products held that “[a] patentee’s authority to limit licensees does

not . . . mean that patentees can use licenses to impose post-sale restrictions on

purchasers that are enforceable through the patent laws.” Id. (emphasis in original).

This case should be decided the same way as Impression Products because the

facts are similar in all meaningful respects. In Impression Products, the Court faced a

post-sale restriction which the plaintiff-patentee argued prevented exhaustion of its

patent rights. Id. at 1525–26. Here, this Court faces a strikingly similar argument from

Ballistic. The “Return Program” customers in Impression Products were restricted from

using the purchased cartridges more than once and from reselling or transferring the

cartridges to anyone but the patentee. Id. at 1525. In return, the customers paid the

patentee a discounted price that customers not in the “Return Program” could not avail.

Id. As in Impression Products, ConsumerCam faced restrictions on resale of patented

products, and the seller, Ballistic, claimed the transaction was a license because of the

post-sale restrictions. In Impression Products, the Court found that the transactions with

the Return Program customers, in all respects, operated like a sale, and the restrictions

did not convert the transactions into licenses because the restrictions were post-sale

restrictions. Id. at 1526, 1531. Because the restrictions here are also post-sale restrictions,

this Court, just like Impression Products, should find that the transaction constituted a

sale and exhausted patentee’s rights. See id.

Under Impression Products, Ballistic cannot use the very restrictions that needed

to be validated through a license to argue that the Agreement was a license. See 137 S.

15

Ct. at 1526. The Agreement, standing alone, must be a license. Ballistic cannot show this

because, save for the restrictions which are themselves not valid under patent law,

ConsumerCam had received full title to the 4,000,000 units purchased for the fixed,

up-front payment of $32,000,000. (R. 3.) There is, therefore, no genuine dispute as to any

material fact that the Agreement was a sale, and ConsumerCam is entitled to judgment

as a matter of law.

C. ConsumerCam had no obligation under U.S. patent law to comply with Ballistic’s post-sale restrictions because any reasonable jury would find that Ballistic’s rights to enforce the restrictions through patent laws were exhausted.

Even though, until Impression Products, patentees could impose restrictions on

their sale of patented products to prevent patent exhaustion, Impression Products

pronounced that sale of patented products exhausts all patent right, “regardless of any

restrictions the patentee purports to impose.” 137 S. Ct. at 1526. Nonetheless, under

Impression Products, a patentee may enforce post-sale restrictions to a limited extent “as

a matter of contract law but may not do so through a patent infringement lawsuit.” Id.

After Ballistic sold the Devices, Ballistic could no longer enforce its post-sale

restrictions through the patent laws. See id. at 1534–35. The proper avenue for enforcing

the post-sale restrictions was through a contract lawsuit. See id. at 1526. Pennyston’s

one-year statute of limitations on Ballistic’s contract claim, however, had run by the

time it decided to bring a lawsuit against ConsumerCam. (R. 4.) ConsumerCam’s

alleged breach of contract occurred on November 12, 2015. (Id.) Ballistic had until

November 12, 2016 to bring its contract claim but chose to wait until December 3, 2016,

by when the one-year statute of limitations had run. (Id.)

16

Because Ballistic cannot lawfully enforce the post-sale restrictions to demand the

per-unit resale fee, either under the patent laws or contract laws, ConsumerCam has no

obligation to pay the $4.00 per-unit fee for the 2,000,000 Devices resold to

OffTheBlockchain. ConsumerCam is, therefore, entitled to judgment as a matter of law

as no reasonable jury can find for the non-movant Ballistic.

D. Public policy disfavors restraints on alienation, and if the district court’s grant of summary judgment is not affirmed, this Court should, at minimum, order a remand back to the district court.

Enforcing Ballistic’s post-sale restrictions is contrary to the public policy against

restraints on alienation. Because the sale of an item incorporating a patent ensures that

the patentee has secured its financial reward for the invention, “the patent laws provide

no basis for restraining the use and enjoyment of the product.” Impression Prods. 137 S.

Ct. at 1526. As such, the patent exhaustion doctrine reflects a “hostility toward restraints

on alienation.” Id.

Here, Ballistic’s post-sale restrictions on ConsumerCam’s use, resale, and

possession of the Device are all restrictions on alienation that “run afoul” of the

common law principle disfavoring restrictions on alienation of property. See id.

Accordingly, the district court’s grant of summary judgment should be affirmed, and

ConsumerCam should not be obligated to comply with Ballistic’s attempted post-sale

restrictions as a matter of public policy.

Finally, even if this Court reverses the district court’s decision, ConsumerCam

requests the Court to also remand the issue back to the district court. Disagreeing with

the district court to hold that there is a genuine issue for trial will require this Court to

17

“consult a ‘vast pretrial record, with numerous conflicting affidavits, depositions, and

other discovery materials.’” Ashcroft v. Iqbal, 556 U.S. 662, 674 (2009) (quoting Johnson v.

Jones, 515 U.S. 304, 316 (1995)). As such, this is a “process [that] generally involves

matters more within a district court’s ken” and should be resolved on remand by the

district court. Id.

II. This Court should reverse the district court’s decision to deny summary judgment because ConsumerCam was entitled to judgement as a matter of law that the claims are not enabled and there is no genuine dispute as to any material fact.

Even when viewing all evidence in the light most favorable to Ballistic, the

evidence still does not pass the requisite threshold of enablement. Ballistic’s expert

provides no corroborating evidence, rather he recites his own opinion, which confirms

that the claims in the invention were created at the time of filing. First, the breadth of

the claims is not commensurate with the breadth of the disclosure. Second, the district

court could not reach the ultimate judgment as a matter of law because it did not make

a determination of the level of skill in art or make clear the level of skill in the art that a

POSITA would reasonably have. Third, because the specific dimension of the length

cannot be accurately predicted without undue testing, the level of predictability in the

art cannot be accurately ascertained. Finally, there is no genuine dispute of material fact

regarding whether a POSITA would have been able to practice the claimed invention

with respect to the amount of direction provided by the patent disclosure, which

provides little to no direction as to how to make the claimed invention.

18

Therefore, the district court was incorrect in denying summary judgment of non-

enablement, and ConsumerCam respectfully requests this Court to reverse the district

court’s decision.

A. This Court reviews the district court’s final decision of summary judgment de novo, while the underlying factual basis for this determination is reviewed for clear error.

This court “review[s] the denial of a motion for judgment as a matter of law

under the law of the regional circuit.” Alfred E. Mann Found. for Sci. Research v. Cochlear

Corp., 841 F.3d 1334, 1339 (Fed. Cir. 2016). The Ninth Circuit reviews denials of

summary judgment de novo. Branch Banking & Tr. Co. v. D.M.S.I., LLC, 871 F.3d 751, 759

(9th Cir. 2017) (citation omitted). This Court reviews the district court’s factual findings

for clear error. Home Sav. of Am. v. United States, 399 F.3d 1341, 1346 (Fed. Cir. 2005).

While determination of enablement is a question of law reviewed de novo, the

underlying facts probative of enablement are reviewed for clear error. In re Wands, 858

F.2d 731, 735 (Fed. Cir. 1988). Because ConsumerCam moved to invalidate the ‘314

Patent for non-enablement, all facts and reasonable inferences are construed favorable

to Ballistic. See Earl, 658 F.3d at 1112. The party challenging the validity of an issued

patent for lack of enablement “must show by clear and convincing evidence that a

[POSITA] would not be able to practice the claimed invention without ‘undue

experimentation.’” Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1188 (Fed. Cir.

2014) (citing In re Wands, 858 F.3d at 736–737).

19

B. This Court should reverse the district court’s decision because the district court failed to properly apply the Wands factors and improperly determined that ConsumerCam was not entitled to summary judgment of non-enablement.

A patent specification must contain a written description of “the manner and

process of making and using” in “full, clear, concise, and exact terms” so that a POSITA

can “make and use the same.” 35 U.S.C. § 112(a) (2012). Failing to meet this standard

renders the claim non-enabled and invalid. In re Wright, 999 F.2d 1557, 1561 (Fed. Cir.

1993).

“A claim is sufficiently enabled even if a considerable amount of

experimentation is necessary,” as long as “the experimentation is merely routine” and

does not impose undue burdens of experimentation. Vasudevan Software, Inc. v.

MicroStrategy, Inc., 782 F.3d 671, 684 (Fed. Cir. 2015) (citing In re Wands, 858 F.2d at 737.)

Experimentation is undue when POSITA must “exercise inventive skill” in order to

practice the full scope of the invention set forth by the claims. In re Beach, 152 F.2d 981,

983 (C.C.P.A. 1946). In determining whether the necessary experimentation is undue,

this Court considers evidence under eight Wands factors. Vasudevan Software, Inc., 782

F.3d at 684. (citing In re Wands, 858 F.2d at 737). The Wands factors that a court may

consider are:

(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.

Id. A genuine issue of material fact regarding any Wands factor precludes summary

judgment of non-enablement. Id.

20

The facts clearly show that the Wands factors favor non-enablement. The ’314

Patent disclosure cannot enable a POSITA to fully practice the claimed invention

because Ballistic’s own evidence clearly shows that the necessary enabling information

was unavailable to a POSITA at the time of filing of the application. Therefore,

ConsumerCam respectfully requests this Court to reverse the district court’s denial of

summary judgment of non-enablement.

1. There is no genuine dispute of material fact that the breadth of the claims is not commensurate with the breadth of the disclosure. Even taking all reasonable inferences in favor of Ballistic, the specification does

not teach the parameters required to achieve the claimed switching speed, and the

breadth of the claims cannot be correlated with the breadth of the disclosure. “[T]he

scope of enablement must be commensurate with the scope of protection sought.” In re

Moore, 439 F.2d 1232, 1236 (C.C.P.A. 1971).

When a range is claimed, there must be reasonable enablement of the scope of

the range. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003). That is, the scope

of the specification should bear reasonable correlation to the scope of the claim. In re

Fisher, 427 F.2d 833, 839 (C.C.P.A. 1970). It was undisputed at the district court level that

the claims should be interpreted for their plain and ordinary meaning. (App. 2.)

Therefore, the district court erred in denying ConsumerCam’s motion for summary

judgment of non-enablement because the specification does not teach how to achieve

the claimed switching speed at the time of filing.

21

Claim 1 is vague and broad. It captured a transistor with a graphene nanoribbon

characterized by a length and a width, which results in switching speed of 1–1.2 THz.

(App. 7.) Claim 1 defined the width to be 5–35 nm. (Id.) The length of the transistor,

however, was undefined. (Id.) The specification only recited one “full, clear, concise,

and exact” dimension—that nanoribbons with 5–15 nm width and 21–23 nm length

achieved the claimed switching speed. (App. 25.) Ballistic’s expert suggested a POSITA

would recognize that switching speeds of 1–1.2 THz could be achieved by simply

conducting “minimum, routine experimentation” to discover the undisclosed range of

the length and width. (Id.) However, the length range of less than 20 nm was not

practicable due to manufacturing limitations at the time of filing. So, a POSITA would

not have been able to find the operative range of L through routine experimentation.

(Id.)

The expert’s statement that the claims provided a "full, clear, concise, and exact"

disclosure that adequately teaches the patented invention to those skilled in the relevant

art deprives the public of a meaningful inventive concept because the level of skill in

the art is not defined. In addition, the claim could not be made at the time of filing to

achieve the claims stated. The claims of the breadth and the disclosure need to be

commensurate. The claim, however, does not specify the range and the one example

given does not cover the entire range. The expert claims that the range would be

obvious to a POSITA; this expert, however, is incorrect because the range cannot be

practiced due to the manufacturing limitations. In fact, the patent even conceded that

the technology to support the claimed range does not even exist; specifically, the patent

22

states that the limitation would be overcome in the near future, indicating it was not

enabled at the time of filing. (App.6.)

Even when taking Ballistic’s expert declaration most favorable to Ballistic, a

POSITA still cannot practice the invention because of the manufacturing limitation.

Undue experimentation would be required to overcome the manufacturing limitation.

This still does not resolve the issue of the untaught but allegedly “recognizable” range

captured by the breadth of the claim at 15–35 nm, which is twice the size of the range at

5–15 nm that is actually taught in disclosure. (App 25.) There is no genuine dispute that

the breadth of the claim is not commensurate with the breadth of the disclosure,

therefore ConsumerCam is entitled to summary judgment for non-enablement.

2. There is no genuine dispute of material fact regarding the level of one of ordinary skill in the art because the expert testimony and the specification demonstrate that a POSITA would not have been able to practice the claimed invention.

The claim must ascertain what would have been obvious to one of ordinary skill

in the art at the time the invention was made, and not to the inventor, a judge, a

layman, those skilled in remote arts, or to geniuses in the art at hand. Envtl. Designs, Inc.

v. Union Oil Co., 713 F.2d 693, 694 (Fed. Cir. 1983). This requires determining what the

ordinary level of skill in the art was at the time of filing. Factors to be considered in

determining the level of ordinary skill in the art may include: “type of problems

encountered in the art; prior art solutions to those problems; rapidity with which

innovations are made; sophistication of the technology; and educational level of active

workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).

23

Here, the level of ordinary skill in the art at the time of filing would not have

allowed a POSITA to practice the claimed invention. With the existing manufacturing

limitations, a POSITA at the time of filing would not have had the skill to know how to

make GNs 20 nm long. (App. 6.) Thus, undue experimentation would be required to

augment the level of ordinary skill in the art that would allow sufficient enablement.

Nonetheless, Ballistic claims that there is at least a genuine dispute of material

fact regarding the level of skill in the art because the district court made no explicit

findings on the level of skill in the art. The district court relied on the expert’s

understanding of what a POSITA would know to assume the level of skill in the art. It

was, however, unreasonable for the district court to rely on a person of extraordinary

skill in the art, such as the expert, to determine the typical level of skill in the art. Thus,

the district court erroneously assumed that the level of skill in the art at the time of

filing would allow a POSITA to practice the claimed invention.

Therefore, there is no genuine dispute of material fact that the level of ordinary

skill in the art factor was not met, and ConsumerCam is entitled to judgment as a

matter of law.

3. There is no genuine dispute of material fact regarding the level of predictability in the art because the specific dimension of length cannot be accurately predicted without testing.

Although inventions involving electrical components are often predictable,

because the invention parameter is unknowable without testing, the art in ’314 Patent

cannot be predicable. See In re Vickers, 141 F.2d 522, 526–27 (C.C.P.A. 1944).

24

Predicable arts are those that can be forecasted accurately without actual testing,

and a single embodiment can provide a broad enablement. U.S. Patent & Trademark

Office, supra Manual of Patent Examining Procedure, § 2164.05(a) [hereinafter Manual]

(citing In re Vickers, 141 F.2d 522, 526–27 (C.C.P.A. 1944)). A field is unpredictable when

a POSITA “cannot predict the outcome of an experiment without actually carrying out

the experiment.” Takeda Pharm. Co., Ltd v. Handa Pharm., LLC, No. C-11-00840 JCS, 2013

WL 9853725, at *46 (N.D. Cal. Oct. 17, 2013).

Here, the invention is unpredictable because the switching speed cannot be

predicted without experimentation. Ballistic’s expert admitted that, at the time of the

invention, a POSITA “would have recognized that switching speed increases as [length]

is decreased,” but the POSITA would still need to “experiment with different value of

the [length]” to achieve the precise desirable switching speed. (App. 25 (emphasis

added).) Ballistic may argue this is weak because foreseeable is “just a word” and their

expert argues that it was already established at the time of filing. ConsumerCam must

show that the POSITA would not have known how to make and use the invention on

the basis of that disclosure; they can, indeed, do so, as what the patent claims to be

achievable was not yet so at the time of filing. Rather Ballistic speculated that it would

be achievable in the future with technical advancements. No reasonable inference can

be drawn to suggest the desirable switching speed of different length can be predicted

without experimentation. Therefore, this district court improperly ruled for summary

judgment as a matter of law.

25

4. There is no genuine dispute of material fact that the amount of direction provided by the inventor in the patent disclosure is insufficient to make the claimed invention.

“The amount of direction needed to enable the invention is inversely related to

. . . the predictability in the art.” Manual, supra, § 2164.03 (citing In re Fisher, 427 F.2d 833,

839 (C.C.P.A. 1970)). The “amount of guidance or direction” refers to that information

in the application, as originally filed, that teaches exactly how to make or use the

invention.” Chiron Corp. v. Genentech Inc., 363 F.3d 1247, 1254 (Fed. Cir. 2004). The more

predictable the art, the less the amount of guidance necessary. Id.

Because the inventor provided little direction on how to make the invention, this

factor strongly favors the finding of non-enablement. The ’314 Patent only disclosed the

dimensions of the invention when the width of the nanoribbons is between 5–15 nm,

leaving the exact dimension of the invention when the width of the nanoribbons is

between 15–35 nm undisclosed. (App. 25.) Without knowing the exact dimension of the

claimed transistor, a POSITA would not be able to make the claimed invention without

further experimentation. Even with routine experimentation, a POSITA still could not

make the invention Even with routine experimentation, a POSITA still could not make

the invention because while the patent recites how to make a 20 nm long nanoribbon, it

was impossible to do so given the manufacturing limitations at the time of filing. Even

if value is given to what the expert is saying, the claim on its own should have already

provided the necessary direction without having to rely on an expert. Therefore,

because the ’314 Patent failed to disclose sufficient direction on how to make the

claimed invention, this factor favors finding the claims of ’314 Patent unenabled.

26

C. The totality of the circumstances show that undue experimentation would be necessary for a POSITA to practice the invention.

The Court’s analysis must consider all the evidence related to each of these

factors, and any conclusion of non-enablement must be based on the evidence as a

whole. In Re Wands, 858 F.2d at 737. Having considered the totality of the circumstances,

even if the Court finds that Ballistic meets all the Wands factors and all reasonable

inferences are made in Ballistic’s favor, ConsumerCam is still entitled to summary

judgment because no reasonable juror could have found that a POSITA would have

been able to practice the invention without undue experimentation.

ConsumerCam has met the burden of proving that there are no genuine disputes

of material fact and is entitled to judgment as a matter of law because Ballistic cannot

satisfy the Wands factors for enablement. Even when drawing all reasonable inferences

in favor of the non-movant, there are no genuine disputes of material fact, and

ConsumerCam was entitled to judgment as a matter of law for non-enablement.

CONCLUSION

Because no genuine disputes of material fact concerning both non-enablement

and patent exhaustion exist or are present, and because ConsumerCam is entitled to

summary judgment on the issues of exhaustion and non-enablement, ConsumerCam

respectfully requests this Court to affirm the district court’s grant of summary judgment

that the ’314 Patent is exhausted, and to reverse and remand the denial of summary

judgment of non-enablement. If the Court finds that the district court’s granting of

27

summary judgment is not warranted, ConsumerCam requests the Court to remand the

case back to the district court.

I

PROOF OF SERVICE

Pursuant to Rule 25(d) of the Federal Rules of Appellate Procedure, Counsel for Appellee, ConsumerCam, LLC. files this BRIEF OF APPELLEE CONSUMERCAM, LLC. I hereby certify that Appellee’s brief was served on the Court of Appeals for the Federal Circuit and on opposing counsel in compliance with Rule 25(d)(1)(B) and submit the following proof of service.

1. Service was made by depositing a copy of the brief with the United States Postal Service, first class postage prepaid, and by email on February 4, 2019.

2. The following individuals were served:

Clerk of Court Kevin Noonan, Regional Director

3. The following addresses were used to effect service:

United States Court of Appeals for the Federal Circuit 717 Madison Place, NW Washington, DC 20439 Kevin E. Noonan McDonnell, Boehnen, Hulbert & Berghoff 300 South Wacker Drive, 32nd Floor Chicago, IL 60606

Respectfully Submitted, February 4, 2019 /s/ Akina R. Khan Date Akina R. Khan February 4, 2019 /s/ Sheila S. Niaz Date Sheila S. Niaz KHAN & NIAZ, P.A.

1000 Main Parkway Emerald City, Pennyston 12345 Counsel for Appellee

II

CERTIFICATE OF COMPLIANCE WITH THE TYPE-VOLUME

LIMITATION, TYPEFACE REQUIREMENTS, AND TYPESTYLE REQUIREMENTS

1. This brief complies with the type-volume limitation of Federal Rule of Appellate Procedure 32(a)(7)(B) or FRAP 28.1(e).

The brief contains 7192 words, excluding the parts of the brief exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii), or The brief uses a monospaced typeface and contains ______ lines of text, excluding the parts of the brief exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii).

2. This brief complies with the typeface requirements of Federal Rule of Appellate

Procedure 32(a)(5) or FRAP 28.1(e) and the type style requirements of Federal Rule of Appellate Procedure 32(a)(6).

This brief has been prepared in a proportionally spaced typeface using Microsoft Word with in size 12 Book Antiqua font, or This brief has been prepared in a monospaced typeface using ___________ with __________.

February 4, 2019 /s/ Akina R. Khan Date Akina R. Khan February 4, 2019 /s/ Sheila S. Niaz Date Sheila S. Niaz KHAN & NIAZ, P.A.

1000 Main Parkway Emerald City, Pennyston 12345 Counsel for Appellee